A Balancing Act: Fair Use and Creative Content By Richard Parke, Ben Natter and Jessica Sblendorio Conventional wisdom, in the trademark arena, has law allows them to stop others from using such marks to been that a party who wishes to use another's trademark prevent the public from being confused about the source must first obtain a license. In recent years, a trend ap­ of corresponding goods or services. These rights, howev­ pears to be emerging in the entertainment industry where er, cannot halt non-infringing use of another's trademark; such use will occur without a party preliminarily seeking one such subset of permissible conduct is known as fair express consent. The same is true in the related area of life use. There are two types of "fair use": Descriptive and story rights. This'new trend demonstrates that entertain­ nominative. Descriptive fair use is a statutory protection, ment industry actors are taking a more aggressive ap­ codified in the Lanham Act,9 while nominative fair use proach to using other's intellectual property, putting them is a judicially created defense. Either is relevant here, be­ potentially at odds with the owners of those rights, whose cause this is a principal argument upon which filmmakers objectives are to police and protect their brands with the and producers rely to use these marks without "paying to public. The justification upon which industry actors rely play." is that using these rights falls under the fair use defense, which excuses the lack of express authorization to use an 1. Descriptive Fair Use owner's trademarks or life story rights. The owners of Federal trademark law recognizes a defense to trade­ these brands or rights, however, may employ their own mark infringement where the mark is used "fairly and aggressive measures to combat this trend, to control and in good faith ... to describe the goods or services of such protect these rights. party, or their geographic origin."10 Known as the de­ scriptive fair use defense, it "in essence, forbids a trade­ An example of this is illustrated by HBO's use of Na­ mark registrant to appropriate a descriptive term for his tional Football League (NFL) trademarks and logos in the [her or its] exclusive use and so prevent others from ac­ show Ballers, which stars Dwayne Johnson.1 Many were curately describing a characteristics of•their goods."11 This surprised when news spread that HBO was not paying defense "is available only in actions involving descriptive licensing fees to the NFL for depicting its logo and team terms and only when the term is used in its descriptive uniforms. 2 The cable series began with Johnson's charac­ sense rather than its trademark sense."12 For example, in ter, Spencer Strassmore, having flashbacks from his play­ Zatarains, Inc. v. Oak Grove Smokehouse, the United States ing days for the Miami Dolphins.3 He was wearing what Court of Appeals for the Fifth Circuit found that the term clearly appeared to be a Dolphin's uniform, with the logo "Fish-Fri" was a descriptive term relating to the prepara­ in plain view-and was chasing down the Buffalo Bills tion and consumption of fried fish and could be used by a quarterback, whose helmet logo was also visible.4 competitor as a descriptive term for similar products.13 Some industry insiders assumed that the NFL would take action against HBO, and that HBO would eventually 2. Nominative Fair Use have .to pay the NFL for using the various team logos and Though not codified in the Lanham Act, the nomina­ uniforms; they were astonished to see a company taking tive fair use defense was recognized as a judicial carve­ on the NFL in such a way.5 Previously, producers who out in New Kids on the Block and addresses circumstances used NFL team logos and uniforms in their vehicles first where no descriptive term may exist: entered into licensing agreements with the NFL.6 This, of With many well-known trademarks, such course, required paying licensing fees.7 HBO responded as Jell-0, Scotch tape and Kleenex, there to the publicity surrounding its actions by stating: "HBO is always mindful of other intellectual property owners, are equally informative non-trademark words describing the products (gelatin, but in this context there is no legal requirement to obtain cellophane tape and facial tissue). But their consent."8 While there have already been analyses of HBO's decision, this article discusses instances (includ­ sometimes there is no descriptive sub­ stitute... when many goods and services ing Ballers) where the "fair use" defense could apply to are effectively identifiable only by their similar conduct, and how arguments are being used in the trademarks. For example, one might refer conflict over clearing-or not-of life story rights. to "the two-time world champions" or I. Fair Use and Trademarks "the professional basketball team from Chicago," but it's far simpler (and more The use of noteworthy brands or trademarks is likely to be understood) to refer to the commonplace in fictional realities, with television, film, Chicago Bulls. In such cases, use of the advertising, and video games being exemplars. Owners trademark does not imply sponsorship or of these "brands," or trademarks, have a bona fide and endorsement of the product because the legally recognized interest in protecting their marks; the NYSBA Entertainment, Arts and Sports Law Journal I Summer 2017 I Vol. 28 I No. 2 35 mark is used only to describe the thing, content or source of the work?26 As this article focuses rather than to identify its source.14 on television series and movies using third-party trade­ marks, whether the use of these marks is legal or defen­ Circumstances involving nominative fair use generally sible also raises the tension inherent in First Amendment occur when a defendant has intentionally used the plain­ considerations and trademark protections for owners. In tiff's mark to refer to the plaintiff but does not designate 15 some cases, if litigation is pursued, the Rogers test could the source of the defendant's own products or services. be an important part of whether the use of this mark by A defendant must satisfy three requirements to use the an alleged infringer has constitutional protections. defense: Ill. The Use of Professional Sports League 1) the plaintiff's product or service in question must be one not readily iden­ Trademarks in Film and Television: A Fair tifiable without use of the trademark; 2) Use? only so much of the mark or marks may A prominent example of an entity that resolutely be used as is reasonably necessary to protects its brand is the NFL. As just one illustration of identify the plaintiff's product or service; this, during the 2017 Super Bowl, U.S. Immigrations and and 3) the user must do nothing that Customs Enforcement (ICE), U.S. Customs and Border would, in conjunction with the mark, Protection (CBP), and the NFL engaged in "Operation suggest sponsorship or endorsement by Team Player."27 The ICE newswire stated that "enforce­ the trademark holder.16 ment actions led by Homeland Security Investigations A 2004 Supreme Court decision, KP Permanent Make­ (HSI) resulted in the seizure of over 260,000 counterfeit Up, Inc. v. Lasting Impression, Inc.,17 cast doubt on the sports-related items worth an estimated $20 million, and continued availability of nominative fair use as a defense, joint investigative efforts led to 56 arrests with 50 con­ even though the case involved a descriptive fair use victions."28 NFL Vice President of Legal Affairs, Delores defense, because the ruling "calls into question whether DiBella, responded to questions about the seizure at a the nominative fair use defendant would have the burden joint press conference by stating that "the NFL is proud to of negating sponsorship or endorsement confusion with continue its work with ICE, the IPR Center, and law en­ the trademark owner."18 Yet even with that consideration forcement departments throughout the country to protect fans and consumers who are seeking an authentic NFL in mind, the concept of nominative'fair use allows for the 29 comparative advertising, parody, and noncommercial use experience during the celebration of Super Bowl LI." 19 of trademarks. The NFL's brand protection efforts go beyond apparel and merchandise, extending to how the NFL is portrayed II. Trademarks and the First Amendment in the media. The NFL persuaded ESPN to stop airing At their core, trademarks are considered to be com­ Playmakers, one of that cable network's most viewed mercial speech.20 As the First Amendment allows for shows. Playmakers depicted the lives of the Cougars, a fic­ significant regulation of commercial speech, constitu­ tional professional football team that was part of a larger tional issues do not typically arise in trademark disputes. organization only referred to as "the League."30 In 2004, However, this analysis changes for creative works, such New York Times reporter Richard Sandomir wrote that as plays, televisions shows/series, films, books, video then NFL commissioner Paul Tagliabue complained about games, and songs, which are generally sold as commercial ESPN's Playmakers series to Michael Eisner, chief officer products.21 When a mark is being employed as a creative of the Walt Disney Company.31 Although the series had use, rather than a descriptive or commercial one, First both high viewership and strong reviews, Playmakers was Amendment considerations become part of the analysis. canceled after just 11 episodes because of pressure from Creative works are protected as free speech under the the NFL, which disliked the portrayal of players' lives First Amendment, and because these types of works in off the field.32 The NFL made it clear to ESPN that NFL the trademark context contain both artistic expression executives and team owners did not want (or appreciate) and commercial promotion, a different analysis applies.22 the negative depiction of players in Playmakers.